”sufficiently fanciful, surprising and unexpected” to be a trademark
The EUIPO’s Cancellation Division declared in a decision dated May 15th, 2025 that “when standard typefaces incorporate graphic design elements into the lettering and these elements have a sufficient impact on the mark as a whole, this gives it a distinctive character”.
The distinctive character of a trademark, also known as distinctiveness, is one of a condition for a trademark to be registered. The distinctiveness refers to the ability of the trademark to clearly identify the origin of goods or services, distinguishing them from those of competitors. An element of a sign is not distinctive if it is exclusively descriptive of the goods and services themselves or of the characteristics of those goods and services (such as their quality, value, purpose, provenance, etc.) and/or if its use in trade is common for those goods and services. Similarly, an element of a sign that is generic (such as a common shape of a container or a common color) will also lack distinctiveness.
In this case, it is about a trademark using the sole stylized verbal element “NICE”, namely the European Union trademark 
which covers various ice products including ice creams. The applicant of the cancellation action claimed in its arguments:
- The word “NICE” has different meanings and on its own will not create a lasting impression of the mark in the consumer’s mind
- With regard to the contested goods, the public would, therefore, understand the trade mark as a simple claim in the form of ‘pleasant ice cream’, ‘pleasant sorbet’, etc.
- The fact that the letter ‘N’ in the contested mark is inverted and that the letter ‘I’ has two dots does not alter this assessment
However, when a word is graphically modified causing a consumer to analytically reflect on the meaning of the mark, it will change the consumer’s perception of the word and allow them to associate it with a specific brand, enabling the distinctiveness of a trademark, as the consumer will be able to identify the origin of the goods or services.
This is exactly what the EUIPO decided in this case to overturn the cancellation applicant’s arguments.
The EUIPO stated that a reversed “N” and a diaeresis “I” is sufficient enough to render the mark distinct due to the unusual combination that an average consumer would not expect, and that the words stylization was enough. It is irrelevant to determine whether the sign ‘NICE’ is descriptive of the contested goods, since the stylisation of the sign is sufficiently fanciful, surprising and unexpected to render the mark distinctive. Therefore, the graphic elements have a significant impact on the contested sign. Consumers will not clearly perceive, without further reflection, that the sign refers to the word ‘NICE’.
This decision is more than welcome and will allow this brand, well known in Luxembourg for ice cream in particular, to continue to delight the taste buds of gourmets while maintaining its monopoly as a trademark.
The lessons here?
- Adding stylized elements to word elements can considerably increase the distinctiveness and then enable the trademark to be registered
Don’t be shy! Be inventive and style your mark in a way that it starts making you view it in a different light.
- A cancellation action for lack of distinctiveness has been filed against your trademark? Do not admit defeat automatically because all is not lost in advance.
Here at Office Freylinger, we can advise you on what makes a trademark distinctive and assist you through all your trademark registration process and cancellation actions